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MICHAEL A. PAINTER, Bar #43600
ainter a;ik law.com
SAAC A ,KAUFMAN & PAINTER
10250 Constellation Boulevard, Suite 2900
Los Angeles, California 90067
(310) 881-6800 - Telephone
(310) 881-6801 - FacsImile
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Attorneys for Plaintiff,
GEORGETHOROGOOD

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UNITED STATES DISTRICT COURT'. ~ .

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CENTRAL DISTRICT OF CALIFORNIA
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GEORGE THOROGOOD, an
individual,

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Plaintiff,
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rCASE
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COMPLAINT FOR TRADEMARK
INFRINGEMENT AND FALSE
DESIGNATION OF ORIGIN

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MUZZY PRODUCTS CORP., a
Georgia corporation; and DOES I - X,
Inclusive,

JURY TRIAL DEMANDED

Defendants.

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COME NOW THE PLAINTIFF, GEORGE THOROGOOD, and for

causes of action against the defendants, complains and alleges as follows:

MAP-PLEADING-1758

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JURISDICTION

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1.

This is a civil action which arises under Sections 32(1) [15 U.S.C.

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§lll4(1)] and 43(a) [15 U.S.C. §1125(a)] of the United States Trademark Act.

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Jurisdiction is based upon 15 U.S.C. Section 1121 and 28 U.S.C. Section 1338(a).

THE PARTIES

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2.

Plaintiff, GEORGE THOROGOOD, is an individual and citizen of the

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United States, having his principal place of business in Los Angeles,

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California (hereinafter referred to as "Thorogood").

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3.

Plaintiff is informed and believes and, based on such information and

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belief, alleges that defendant, MUZZY PRODUCTS CORP. is a Georgia corpora-

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tion and has its principal place of business in Cartersville, Georgia and does busi-

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ness throughout the United States in general and in the Central District of

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California in particular (hereinafter referred to as "Muzzy").

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4.

The true names or capacities, whether individual, corporate, associate,

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representative, or otherwise, of the defendants named herein as DOES I - X,

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inclusive, are unknown to plaintiff who therefore, pursuant to Local Rule 19-1 of

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this Court, sues said defendants by such fictitious names and plaintiff will amend

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this Complaint to show their true names and capacities when the same have been

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ascertained.

FIRST COUNT FOR TRADEMARK INFRINGEMENT

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5.

Plaintiff hereby repeats and realleges Paragraphs 1 - 4, inclusive, as

though set forth in full herein again.
6.

In 1983, and long prior to any of the acts of the defendants com-

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plained of in this Complaint, Thorogood, by and through his predecessor-in-

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interest, adopted the mark BAD TO THE BONE as a trademark to designate

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clothing, namely, T-shirts, tank tops, jackets and hats, said mark being extensively

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used, advertised and promoted throughout the United States in general and in the

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State of California in particular.
MAP-PLEADING-1758

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7.

Since long prior to any of the acts of Muzzy complained of in this

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Complaint, Thorogood, by and through his predecessor-in-interest, applied for and

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registered its BAD TO THE BONE trademark on the Principal Register in the

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United States Patent and Trademark Office, a copy of Certificate of Trademark

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Registration No. 3,684,749 being attached hereto as Exhibit 1. Based upon the

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rights accorded registration of the trademark and the trademark's long and contin-

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uous use by Thorogood, and his predecessor-in-interest, to designate clothing,

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namely, T-shirts, tank tops, jackets and hats, Thorogood owns the exclusive right

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to manufacture and sell clothing, namely, T-shirts, tank tops, jackets and hats

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designated by the BAD TO THE BONE trademark and to advertise and promote

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the sale of clothing, namely, T-shirts, tank tops, jackets and hats through the use of

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the BAD TO THE BONE trademark.

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8.

Since long prior to the acts of Muzzy complained of in this Com-

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plaint, Thorogood and his predecessor-in-interest, extensively marketed, sold,

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advertised and promoted the sale of clothing, namely, T-shirts, tank tops, jackets

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and hats under the trademark BAD TO THE BONE. Thorogood has gained a

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substantial reputation in connection with clothing, namely, T-shirts, tank tops,

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jackets and hats marketed and sold under the BAD TO THE BONE trademark. By

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reason of the marketing and sale of products under the above trademark, the trade

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and public, prior to said acts of defendants complained of in this Complaint, have

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come to recognize the trademark BAD TO THE BONE, when used in connection

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with clothing, namely, T-shirts, tank tops, jackets and hats as identifying such

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products as being exclusively supplied by, authorized or affiliated with Thorogood.

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9.

Long after Thorogood's first use of the BAD TO THE BONE trade-

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mark in commerce, Muzzy first commenced use of the trademark BAD TO THE

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BONE to manufacture, identify, distribute, advertise and/or promote the sale of

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hats, T-shirts and sweatshirts in the United States. Muzzy has used the trademark

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MAP-PLEADING-1758

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BAD TO THE BONE despite the fact the identified trademark wrongfully appro2

priates Thorogood's registered BAD TO THE BONE trademark and is confusingly

3 : similar thereto.
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10.

Muzzy's act of manufacturing, distributing, advertising, marketing

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and promoting the sale of hats, T-shirts and sweatshirts through the use of the

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trademark BAD TO THE BONE is directed to the same segment of the purchasing

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public to which Thorogood directs his products.

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11.

Muzzy's use of the trademark BAD TO THE BONE as alleged above

to distribute, designate, adve11ise and/or promote the sale of hats, T-shirts and

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sweatshirts is likely to cause confusion or mistake or to deceive the purchasers of

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its products as to the source of origin of defendants' products and to cause defen-

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dants' products to be passed off or viewed as those which are provided or autho-

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rized by Thorogood.

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12.

That unless restrained by this COUl1, Muzzy will continue to use the

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trademark BAD TO THE BONE to manufacture, identity, distribute, advertise

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and/or promote the sale of hats, T-shirts and sweatshirts and, as a result thereof, the

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public generally will be misled and deceived into believing that the products of

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defendants, and each of them, are those of, or are affiliated with Thorogood, to the

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irreparable damage and injury of the business of Thorogood.

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13.

Thorogood has duly demanded that Muzzy cease and desist from the

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aforesaid violation of Thorogood's rights, defendant having refused to do so. This

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is therefore an exceptional case within the meaning of §35 of the United States

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Trademark Act, 15 U.S.C. §1117, entitling Thorogood to recover reasonable

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attorneys' fees

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14.

The aforesaid actions of Muzzy has irreparably damaged Thorogood

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and will, unless restrained, continue to so damage the business of Thorogood and

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its good will, for all of which there is no adequate remedy at law.

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MAP-PLEAD!~G-1758

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SECOND COUNT FOR FEDERAL UNFAIR COMPETITION

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AND FALSE DESIGNATION OF ORIGIN

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Plaintiff hereby repeats and realleges Paragraphs 1 - 4, and 5 - 14,

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inclusive, of the First Count as though set forth in full herein again inclusive, of the

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First Count as though set forth in full herein again.

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16.

Muzzy's above-alleged actions constitute the use in connection with

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goods of false or misleading descriptions and representations with respect to the

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origin, sponsorship or approval of its products and the publicity therefor by

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suggesting that such goods and the advertising thereof are connected with or

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associated, sponsored or affiliated with Thorogood, or that the same truly origi-

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nated with Thorogood. Muzzy has caused its hats, T-shirts and sweatshirts, and the

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distributing, designating, advertising and/or promotion thereof, to enter United

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States commerce. The misappropriation and use of Thorogood's BAD TO THE

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BONE trademark by Muzzy as well as Muzzy's other actions described above

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constitute false and misleading descriptions of fact and representations of fact that

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are likely to give the public a false impression and to confuse the public as to the

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source of defendants' goods.

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17.

Thorogood is informed and believes and, based on such information

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and belief, alleges that Muzzy adopted and used the trademark BAD TO THE

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BONE to identify hats, T-shirts and sweatshirts with actual knowledge of

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Thorogood's long prior use of the BAD TO THE BONE trademark and with the

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intent to trade on the reputation and good will of that mark.

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18.

Although Muzzy has been requested by Thorogood to cease the

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advertising and promotion of the sale of T-shirts through the use of the trademark

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BAD TO THE BONE, Muzzy has, nevertheless, refused said request and have

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continued to use said mark in connection with advertising, marketing and promot-

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ing the sale of its products. This is therefore an exceptional case within the

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MAP-PLEADING-1758

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meaning of §35 of the United States Trademark Act, 15 U.S.C. § 1117, entitling
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Thorogood to recover reasonable attorneys' fees.

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19.

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The aforesaid actions of Muzzy has irreparably damaged Thorogood

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and will, unless restrained, continue to so damage the business of Thorogood and

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its good will, for all of which there is no adequate remedy at law.

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WHEREFORE, plaintiff seeks judgment against Muzzy as follows:

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1.

That Muzzy and its officers, agents, servants, employees, attorneys,

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confederates, related companies, and all persons acting in concert or participation

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with it, be enjoined and restrained during the pendency of this action, and permanently thereafter:

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(a)

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from using in any manner as a trademark or trade name the

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mark BAD TO THE BONE, alone or in combination with any other word or words

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or design, in connection with designating, distributing, advertising, promoting

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and/or offering for sale or the sale of hats, T-shirts and sweatshirts not produced by

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Thorogood, or not authorized by Thorogood to be sold in connection with said

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mark;
(b)

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from passing off, inducing or enabling others to sell or pass off

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hats, T-shirts and/or sweatshirts which are not Thorogood's or not offered under

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the control and supervision of Thorogood and approved by Thorogood, through the

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use of the mark BAD TO THE BONE, or formatives thereof;
( c)

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from committing any acts calculated to cause purchasers to

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believe that Muzzy's hats, T-shirts and/or sweatshirts are sponsored by or ap-

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proved or connected with or guaranteed by or offered and sold under the control

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and supervision of Thorogood; and
(d)

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from otherwise competing unfairly with Thorogood in any

manner.

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2.

That Muzzy be required to deliver up to Thorogood or destroy any

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and all price lists, labels, signs, prints, packages, wrappers, receptacles, advertising

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matter, promotional and other material in the possession of Muzzy, or under its

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control bearing the mark BAD TO THE BONE alone, or in combination with any

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other word or words or design used in connection with the distributing, designat-

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ing, advertising, promotion or sale of hats, T-shirts and/or sweatshirts not produced

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by Thorogood or not made under the supervision and control of Thorogood.

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3.

That Muzzy account for and pay over to Thorogood all damages

sustained by Thorogood and all profits realized by Muzzy by reason of Muzzy's

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unlawful acts and that the amount of damages for infringement of Thorogood's

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trademark be increased by a sum not exceeding three times the amount thereof as

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provided by Section 35 of the United States Trademark Act, 15 U.S.C. § 1117.

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4.

That Thorogood be awarded exemplary damages in the amount of

$100,000.
5.

That Thorogood be awarded its costs of suit, including reasonable

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attorneys' fees and have such other and further relief as to the Court may deem

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equitable, including but not limited to, any relief set forth under Section 34-39 of

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the United States Trademark Act.

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PLAINTIFF DEMANDS A JURY TRIAL OF THIS ACTION.

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Respectfully submitted,

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ISAACMAN, KAUFMAN & PAINTER

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Dated;l~/;y

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MAP-PLEADlNG-1758

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